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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`CRADLEPOINT, INC., HONEYWELL INTERNATIONAL, INC.,
`SIERRA WIRELESS, INC., TCL COMMUNICATION TECHNOLOGY
`HOLDINGS LIMITED, TCT MOBILE INTERNATIONAL LIMITED,
`TCT MOBILE, INC., TCT MOBILE (US) INC., TCT MOBILE (US)
`HOLDINGS INC., AND THALES DIS AIS DEUTSCHLAND GMBH,
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`Petitioner,
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`v.
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`3G LICENSING SA,
`Patent Owner.
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`Patent No. 7,580,388
`Issue Date: August 25, 2009
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`Inter Partes Review No.: IPR2021-00906
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`PETITIONER’S REPLY
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`IPR2021-00906
`U.S. Patent No. 7,580,388
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`TABLE OF CONTENTS
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`B.
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`C.
`
`TABLE OF AUTHORITIES ............................................................................... iii
`TABLE OF EXHIBITS ....................................................................................... iv
`I.
`Introduction .................................................................................................. 6
`II.
`Legal Standards ........................................................................................... 7
`III. Claim Construction ...................................................................................... 7
`A.
`“Legacy Configuration” .................................................................... 8
`B.
`“Available Configuration” .............................................................. 10
`IV. Ground 1: Claims 1-3, 8, 9, 12, 56, and 57, anticipated by TS 25.331
`v6.1.0 ......................................................................................................... 11
`A. All elements of challenged claims 1-3, 8, 9, 12, 56, and 57 are
`taught by TS 25.331 v6.1.0 ............................................................. 12
`PO improperly asks the Board to determine that post-critical date
`third-party documents read-on of the ’388 Patent. ......................... 13
`PO reads into the claims 1 and 33 limitations from the
`Specification that simply are not part of the claims ........................ 15
`1.
`PO misapplies the doctrine of claim differentiation ............. 16
`2.
`Claim differentiation actually contradicts PO’s argument ... 18
`TS25.331 discloses Element 1[f] .................................................... 19
`TS-25.331 v6.1.0 Discloses the Additional Elements of Claims 2,
`3, 6, 8, 9, 12, 34, 35, 38, 40, 41, 44, 56, 57, 62, and 63. ................. 19
`V. Ground 2: Claims 1-4, 6, 8, 9, 12, 33-36, 38, 40, 41, 44, 56, 57, 62, and
`63 are obviousness Over TS 25.331 V6.1.0 .............................................. 20
`A. Not Solving Long-Standing Problem .............................................. 22
`Page
`i
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`D.
`E.
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`IPR2021-00906
`U.S. Patent No. 7,580,388
`B.
`The ’388 Patent Does Not Solve the Problem Identified by PO ..... 24
`C.
`The 3GPP standard body is not a regulatory body. ......................... 24
`VI. GROUND 3: Claims 1-4, 6, 8, 9, 12, 33-36, 38, 40, 41, 44, 56, 57, 62,
`and 63 are Obvious over TS 25.331 v6.1.0 and Bannister. ....................... 25
`VII. Grounds 4 and 5: Claims 1-4, 6, 8, 9, 12, 33-36, 38, 40, 41, 44, 56, 57,
`62, and 63, are Obvious over Beckmann and TS-25.331 v6.1.0 and also
`in further view of Bannister. ...................................................................... 26
`A.
`Beckmann is used in combination with TS-25.331 and TS-25.331
`further in view of Bannister. ........................................................... 27
`Beckmann and TS-25.331 and also in further view of Bannister
`render obvious claims 1-4, 6, 8, 9, 12, 33-36, 38, 40, 41, 44, 56,
`57, 62, and 63. ................................................................................. 28
`CERTIFICATION OF WORD COUNT UNDER 37 CFR § 42.24(d) ................. a
`CERTIFICATE OF SERVICE .............................................................................. b
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`B.
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`IPR2021-00906
`U.S. Patent No. 7,580,388
`TABLE OF AUTHORITIES
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`Cases
`Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1367-68.
`(Fed. Cir. 2007) .................................................................................................. 17
`Baxalta Inc. v. Genentech, Inc., 972 F.3d 1341, 1346 (Fed. Cir. 2020) ................ 17
`Bradium Techs. LLC v. Iancu, 923 F.3d 1032, 1050 (Fed. Cir. 2019) .................. 27
`Ecolochem, Inc. v. S. Cal. Edison Co., 227 F.3d 1361, 1376–
`77 (Fed.Cir.2000) ............................................................................................... 22
`GPAC, 57 F.3d at 1580, 35 USPQ2d at 1121 ........................................................ 21
`In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (en
`banc) ................................................................................................................... 21
`In re Keller, 642 F.2d 413, 425 (CCPA 1981) ...................................................... 27
`In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ........................... 27
`In re Paulsen, 30 F.3d 1475, 1482, 31 USPQ2d 1671, 1676 (Fed. Cir. 1994) ..... 21
`Karlin Tech., Inc. v. Surgical Dynamics. Inc., 177 F.3d 968, 971-72 (Fed. Cir.
`1999) .................................................................................................................. 16
`Leo Pharm. Prods. V. Rea, 726 F.3d 1346, 1358-59 (Fed. Cir. 2013) ............ 21, 24
`Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987) .... 7,
`10, 12
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`Statutes
`35 U.S.C. § 103 ...................................................................................................... 21
`35 U.S.C. § 331(b) ................................................................................................. 10
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`IPR2021-00906
`U.S. Patent No. 7,580,388
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`TABLE OF EXHIBITS
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`Exhibit
`1001
`
`Title
`U.S. Patent No. 7,780,388 to Kim (“the ’388 patent”)
`
`1002
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`1003
`
`1004
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`Prosecution History of U.S. Patent No. 7,580,388, including
`Prosecution History of U.S. Provisional Patent Application Nos.
`60/576,214 and 60/589,630.
`
`3rd Generation Partnership Project (3GPP); Technical
`Specification for the Radio Resource Control (RRC) protocol:
`3GPP TS 25.331 V6.1.0 (2004-03) (“TS-25.331”)1
`
`Bannister, Mather, & Coope, CONVERGENCE TECHNOLOGIES FOR
`3G NETWORKS, IP, UMTS, EGPRS AND ATM, Wiley, March
`2004, (“Bannister”)2
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`1005
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`U.S. Patent No. 7,333,443 (“Beckmann”)
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`
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`1 Only the currently relied on portions of the technical specification have
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`been submitted as an exhibit. Petitioner reserves the right to submit additional
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`portions in response to any Patent Owner’s submissions or constructions.
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`2 Only the currently relied on portions of the book have been submitted as an
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`exhibit. Petitioner reserves the right to submit additional portions in response to
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`any Patent Owner’s submissions or constructions.
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`IPR2021-00906
`U.S. Patent No. 7,580,388
`Exhibit
`1006
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`Title
`Declaration of James Olivier, Ph.D.
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`Declaration of Craig Bishop
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`Declaration of James Mullins, Ph.D.
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`Attachment A-1 of Mullins Declaration
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`Attachment A-2 of Mullins Declaration
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`Attachment A-3 of Mullins Declaration
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`Attachment A-4 of Mullins Declaration
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`Attachment A-5 of Mullins Declaration
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`TS-25.331 (Section 8.5.9)
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`I.
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`Introduction
`The Board’s Institution Decision (“ID”) (Paper 18) properly found that the
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`Petition (“Pet.”) (Paper 8) demonstrates the unpatentability of the Challenged
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`Claims and that the Petitioner “has shown a reasonable likelihood that it would
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`prevail in establishing the unpatentability of claims 1-4, 6, 8, 9, 12, 33-36, 38, 40,
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`41, 44, 56, 57, 62, and 63 of the ’388 patent.” Paper 18 at 44. Patent Owner’s
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`Response (“POR”) (Paper 32) fails to rebut any of the preliminary findings in the ID
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`successfully, and the Petition sets forth references and/or combinations of references
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`that anticipate and/or render obvious each of the Challenged Claims.
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`PO now proposes explicit constructions attempting to support the same faulty
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`argument it made in its Preliminary Response, that the Challenged Claims require
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`new configurations not available in the previous standards. As the Board found in
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`its ID, however, nothing in the Challenged Claims requires a “new configuration
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`that is not available or permitted under a previous standard.” Paper 18, 14. What’s
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`more, PO’s proposed constructions are unsupported and transparent attempts to limit
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`the claims to particular post-critical date standards even though the claims recite
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`nothing of the sort.
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`Finally, PO also fails to establish non-obviousness of the claims in view of
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`the references of Grounds 2-5 of the Petition.
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`II. Legal Standards
`“A claim is anticipated only if each and every element as set forth in the claim
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`is found, either expressly or inherently described, in a single prior art reference."
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`Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987).
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`Hence, contrary to PO’s assertion, for anticipation of an at-issue claim of the ’388
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`patent, each and every claim element must be found in a single prior art reference.
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`Indeed, there is no doctrinal support for PO’s position that “TS 25.331 v6.1.0 cannot
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`anticipate the inventions of the ’388 patent because the alleged inventions were only
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`incorporated into the later TS 25.331 v6.6.0.” Paper 32, 16. Nothing in Verdegaal
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`Bros. supports using a reference created after a patent’s critical date when
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`determining anticipation, much less combining the primary reference with a later
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`secondary reference to refute anticipation. Indeed, as part of its argument, PO also
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`recites case law establishing the impropriety of hindsight analysis. See Ortho-
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`McNeil Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358, 1364 (Fed. Cir. 2008).
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`Yet, using post-critical date documents, as PO attempts to do, is the epitome of
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`hindsight.
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`III. Claim Construction
`As previously set forth, all claim terms in the ’388 patent “should be given
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`their plain and ordinary meaning to a POSITA.” Pet., 16. PO’s proposed claim
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`constructions, by contrast, constitute an unsupported attempt to limit the claims to
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`particular standards’ connection management procedures and parameters. PO
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`previously made this same argument without proffering specific constructions (see
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`Paper 18, 13-18 (Noting that “Patent Owner asserts: ‘TS 25.331 v6.1.0 describes the
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`existing 3GPP framework, connection management procedures and parameters,
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`etc.,’”) which the Board properly rejected at Institution, stating:
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`[N]othing in independent claim 1 or 33 requires in the first
`message a new configuration that is not available or permitted
`under a previous standard. We also agree with Petitioner that
`nothing in either claim 1 or claim 33 requires backward
`compatibility, where terminals which do not support the new
`configuration are not affected. Further, we disagree with Patent
`Owner’s position that the claims require a new configuration, not
`previously available, which increases the message block size for
`an existing channel.
`Id. at 14. PO’s explicit constructions are no more convincing than the implicit
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`constructions PO previously argued. Nothing limits the Challenged Claims to
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`previously not-existing configurations described in the ’388 Specification.
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`“Legacy Configuration”
`A.
`Legacy configuration should be given its plain and ordinary meaning. By
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`contrast, PO’s proposed construction is a transparent and unsupported attempt to
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`limit the claim language based upon the supposed “adoption of the ’388 patent’s
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`inventions into the [later] 3GPP specification,” as defined by PO. Paper 32, 9. In
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`support of its construction, PO specifically argues that a “legacy configuration” must
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`be one “defined by the 3GPP specification releases predating” the alleged filing date;
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`however, PO’s logic begs the question of how the definition can exist at the time of
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`the provisional patents filing. Nothing in the Challenged Claims or the ’388 patent
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`limits the claims in this way. The claim language does not recite any particular
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`standard, specify a “mobile terminal in a network” or a “mobile communication
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`device for transmitting control information for the network” with a generic mobile
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`device operating in a generic network. Ex. 1001, 17:29-30, 19:42-44. Further, the
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`’388 patent is explicit that the invention is not limited to any particular wireless
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`technology or standard, much less a particular version of such a standard:
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`“[T]he present invention should not limit the scope of the present
`invention to certain type of wireless communication system, such
`as UMTS. The present invention is also applicable to other
`wireless communication systems using different air interfaces
`and/or physical layers, for example, TDMA, CDMA, FDMA,
`WCDMA, etc.”
`Id., 16:57-60.
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`PO also improperly asks the Board to define claim terms by whether a third
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`party to this proceeding, the 3GPP organization, has incorporated the ’388 patent’s
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`disclosure into its documents. However, a definition for a term in the ’388 patent
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`that is derived from another’s party’s later product (or standard) requires the Board
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`to exceed its statutory scope of 35 U.S.C. § 331(b) because, by definition, prior art
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`to be considered in an anticipation analysis must come before the asserted patent’s
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`critical date. See Verdegaal Bros., 814 F.2d 628, 631.
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`“Available Configuration”
`B.
`PO also improperly asserts that the term “available configuration” should be
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`construed as “a configuration available to be used for transmitting a message.” Paper
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`32, 10 (citing Ex. 2018, ¶37). Yet, PO cites no support for the “available to be used
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`for transmitting a message” part of the definition. While “legacy configuration
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`mode,” “legacy configuration identities,” “predefined configuration mode,”
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`predefined configuration identity,” and “predefined new PRACH configurations”
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`are mentioned in the specification, PO provides no support for the added requirement
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`of “available to be used.” Just because a configuration is available, does not mean
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`it is available to be used for transmitting message. What’s more the proposed
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`construction would make duplicative the language “available configuration for
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`transmitting a second message,” (Ex. 1001, 17:32-34, 19:47-49) as substituting PO’s
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`construction would yield the awkward and confusing: “[a configuration available
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`to be used for transmitting a message] for transmitting a second message.
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`IV. Ground 1: Claims 1-3, 8, 9, 12, 56, and 57, anticipated by TS 25.331 v6.1.0
`The Board properly found that “each of the Claims 1-3, 8, 9, 12, 56, and 57 is
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`anticipated by TS-25.331.” See Paper 18, 30.
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`PO attempts to establish non-anticipation by relying on references that are
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`dated after the critical date of the ’388 patent. Id. at 1. Pages of its brief (PO
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`Response at 16-24) are devoted to tracing the process by which “Additional
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`Dynamic Transport Format Information for CCCH”—in other words PRACH
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`configurations with an extension directed to and/or allowing for larger transport
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`block sizes—were proposed, modified, and ultimately incorporated into TS 25.331
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`as changes to v.6.5.0. This approach erroneously assumes, however, that the
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`language of the challenged claims is directed to these changes. The claim language
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`is not so limited, as the Board previously found.
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`PO asserts that the “inventions of the ’388 patent were only incorporated into
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`a later version of the standard.” Paper 32 at 1. Regardless of what was added in later
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`versions of the standard, this does not refute that the claimed alleged invention of
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`the ’388 Patent is disclosed or taught in the cited prior art references, including in
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`the TS 25.331 v6.1.0 reference.
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`A. All elements of challenged claims 1-3, 8, 9, 12, 56, and 57 are taught
`by TS 25.331 v6.1.0
`Anticipation requires that the elements of the claims 1-3, 8, 9, 12, 56, and 57
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`be taught or described by a single prior art reference while not reading limitations
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`into the claims from the specification. Verdegaal Bros., 814 F.2d 628, 631 (Fed.
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`Cir. 1987) . Here, the Board already has highlighted PO’s failure to explain where
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`the alleged innovations cited by PO are required by the claims: “Patent Owner does
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`not identify or explain where such features are recited in any claim, or specifically
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`identify any specific claim language which should be construed as having these
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`limitations and why.” Paper 18, 14. Yet, PO make no attempt to resolve this
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`incongruity noted by the Board.
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`Instead, PO attempts to make a distinction between a PRACH channel and a
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`PRACH configuration. Paper 32, 15. However, independent claims 1 and 33 only
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`mention “at least one available configuration is … (PRACH) information related to
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`a common control channel (CCCH) logic channel.” Ex. 1001, 17:40-42, 19:63-65.
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`None of the Challenged Claims have claim element(s) directed to extended PRACH
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`configurations or configurations allowing for larger transport block sizes.
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`First, PO’s attempted distinction of “PRACH channel” versus a PRACH
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`configuration is redundant because, as the claims set forth, an “access channel” is a
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`“PRACH,” so PO’s interpretation would be an “access channel (PRACH channel).”
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`PRACH configuration is the configuration that defines a PRACH. More
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`importantly, the term PRACH configuration does not appear in the claims.
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`“PRACH” information and not “PRACH configuration” is the claim term. Also,
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`TS-25.331 discloses selecting a PRACH from the “PRACH system information list.”
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`See Pet., 25-26. The selection is not based on PRACH channel as erroneously
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`asserted by PO.
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`B.
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`PO improperly asks the Board to determine that post-critical date
`third-party documents read-on of the ’388 Patent.
`PO relies on numerous documents that postdate the ’388 patent’s June 1, 2004
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`priority date.
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`Exhibit
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`Date of Exhibit
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`2008
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`2010
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`2011
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`2021
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`2022
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`2023
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`2024
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`2025
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`August 16-20, 2004
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`October 4-8, 2004
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`August 29-September 2, 2005
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`August 23, 2004
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`October 4-8, 2004
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`October 8, 2004
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`February 14-18, 2005
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`February 21, 2005
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`2026
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`2027
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`2028
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`2029
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`2030
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`2031
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`February 14-18, 2005
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`February 14-16, 2005
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`February 14-18, 2006
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`March 9-13, 2005
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`March 9-13, 2005
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`March 9-13, 2005
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`Exs. 2008, 2010-2011, 2021-2031. After PO’s lengthy discussion of these post-
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`critical date exhibits, PO asserts TS-25.331 was modified in line with the invention
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`of the ’388 patent, but only after the ’388 patent’s priority date. See Paper 32, 26.
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`PO once again rests its argument on the notion that the claim language is limited to
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`a “new, or predefined configuration.” See Paper 32, 27-29. PO’s argument is based
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`on an implied construction of the term “additional transport format information…,”
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`but PO proposes no construction for this term and nothing in the claim language
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`recites or requires a new or predefined configuration, nor does it recite a “larger”
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`message size or transport block size. This interpretation ignores the claim language.
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`PO goes on to attack Petitioner’s expert by asserting Dr. Olivier “also
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`admitted that he did not know that TS-25.331 was ultimately (i.e., post critical date)
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`changed to incorporate the inventions of the ’388 patent.” Id. (citing Ex. 2017 33:11-
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`34, 36:8-39:17.) However, Dr. Olivier admitted nothing of the sort, and he was not
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`asked to review a document that was dated after the priority date of the ’388 patent,
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`nor was he asked to issue an opinion of infringement/non-infringement.
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`C.
`
`PO reads into the claims 1 and 33 limitations from the Specification
`that simply are not part of the claims
`PO admits that it relies on the specification and prosecution history when
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`attempting to show “at least one configuration” in claims 1 and 33 requires a new or
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`predefined configuration. Indeed, this language is not found in claims 1 and 33.
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`Instead, PO improperly tries to read additional limitations from the specification into
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`the claims to avoid invalidity.
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`Similarly, PO states “[t]he term ‘additional’ [in element 1[f]] shows that
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`transport format information is indicated in the extension.” Paper 32, 29 (Citing Ex.
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`2018, ¶73). The term “extension” is not found in independent claims 1 or 33 element
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`[F] and is being (improperly) read into the claims by the PO.
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`Claims 1 and 33 explicitly recite what the “additional transport information
`
`for the CCCH” must comprise: “at least one of a RLC (Radio Link Control) size, a
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`transport block size, or number of transport blocks.” Ex. 1001, 17:40-46, 19:63-
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`20:2. Nothing in this language recites or implies that the information must be part
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`of an extension or that it must include “new, predefined configurations,” extended
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`configurations, or that this information must enable additional transport block sizes.
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`Indeed, the claim language is clear that this “additional transport information” need
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`only include one or more of an RLC size, number of transports, or a transport block
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`size.
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`PO misapplies the doctrine of claim differentiation
`1.
`PO asserts that comparing claims 1 and 33 to dependent claims 2 and 34 show
`
`that claims 1 and 33 must include new, predefined configurations. Paper 32, 31.
`
`Claim differentiation is “based on the common-sense notion that different words or
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`phrases used in separate claims are presumed to indicate that the claims have
`
`different meanings and scope. Karlin Tech., Inc. v. Surgical Dynamics. Inc., 177
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`F.3d 968, 971-72 (Fed. Cir. 1999). The doctrine of claim differentiation does not
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`apply to the claims in the ’388 patent as PO argues. Claims 1 and 33 require “the
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`first message including information indicating at least one available configuration
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`….” Claims 2 and 34 further limit the “at least one available configuration” to
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`comprise a “a legacy configuration mode and a legacy configuration identity.”
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`Claim 1 introduces having at least one configuration; however, it does not require
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`the “at least one available configuration” to have multiple parts. Nor does it exclude
`
`having multiple parts. Claim 2, by contrast, has a narrower scope and requires not
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`only a legacy configuration mode, but a legacy configuration identity. The legacy
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`configuration identity is an introduction of a claim element that was not found in the
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`independent claim. Therefore, the scope is different between claims 1 and 2, but
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`claim 1 does not exclude legacy-only configurations simply because legacy
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`configurations are recited in a dependent claim. See Andersen Corp. v. Fiber
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`Composites, LLC, 474 F.3d 1361, 1367-68. (Fed. Cir. 2007) (holding that when a
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`dependent claim introduces an entirely new element that is not found in the
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`independent claim, application of claim differentiation is improper).
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`PO also argues that because Claims 2 and 34 further specify the “at least one
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`available configuration” includes a legacy configuration, then the independent claim
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`somehow excludes a “legacy configuration.” Not so. Claims 2 and 34 would make
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`no sense if claims 1 and 33 excluded legacy configurations, as PO argues. That is
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`not how claim differentiation works, as it is exceedingly common for an independent
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`claim to have a limitation that covers multiple alternatives and for individual
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`dependent claims to recite further limitations claiming only one of the alternatives
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`covered by the independent claims.
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`For example, an independent claim might recite balls used in sports, while an
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`individual dependent claim might recite a basketball and another a football.
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`See Baxalta Inc. v. Genentech, Inc., 972 F.3d 1341, 1346 (Fed. Cir. 2020) (“The
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`district court's construction [of the independent claim] which excludes these
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`explicitly claimed embodiments [in the dependent claims] is inconsistent with the
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`plain language of the claims.”). However, under the logic of PO’s (incorrect)
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`argument, the independent claim would have to be interpreted to exclude the
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`specifically claimed types of balls used in sports.
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`To be clear, Petitioner is not arguing that the language of claims 1 and 33
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`exclude a new, predefined configuration or configurations allowing larger message
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`sizes. Petitioner only argues that the claims do not require such configurations.
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`2. Claim differentiation actually contradicts PO’s argument
`Dependent Claims 3 and 35 recite “the at least one available configuration
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`comprises a predefined configuration mode and a predefined configuration identity.”
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`Claims 4 and 36 specify that the predefined configuration mode comprises at least
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`one of an additional channel, an increased block size, new channel mapping
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`configuration, or a new message format. Because these limitations are recited in
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`dependent claims, it is presumed that independent claims 1 and 33 do not require a
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`“predefined configuration mode,” or an “increased block size”. Phillips v. AWH
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`Corp., 415 F.3d 1303, 1314-1315 (Fed. Cir. 2005) (“the presence of a dependent
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`claim that adds a particular limitation gives rise to a presumption that the limitation
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`in question is not present in the independent claim.”) Indeed, the only Challenged
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`Claim that recites an “increased block size” does so as part of a list of alternatives in
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`a Markush grouping, demonstrating that PO is wrong that the independent claims
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`require a new or extended configuration with larger block sizes.
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`D. TS25.331 discloses Element 1[f]
`The Board properly concluded
`that “[t]he mere
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`inclusion of
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`the
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`[configuration] parameters in the Table conveys the meaning because the listed
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`parameters all are used to configure common channels in the terminals.” Paper 18,
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`29. Despite this determination, PO again asserts that TS-25.331 fails to disclose
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`element 1[f] because TS25.331 allegedly does not teach which of the recited
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`parameters to select from the table. Paper 32, 33. First, PO fails to identify what
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`requirements the parameters in the table do not include or how this table fails to
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`disclose sending any and all of the parameters, depending on the situation. Second,
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`the Petition explains in detail how every claim element in the claims of the ’388
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`patent is taught and described by TS-25.331. See Pet. 29-30.
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`E.
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`TS-25.331 v6.1.0 Discloses the Additional Elements of Claims 2, 3,
`6, 8, 9, 12, 34, 35, 38, 40, 41, 44, 56, 57, 62, and 63.
`PO’s argument, grouping claims 34 and 35 with claims 2 and 3, and arguing
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`that they are not anticipated, results in an admission that claims 34 and 35 stand with
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`claims 2 and 3, and hence the additional dependent limitations may be subject to
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`anticipation. Paper 32, 35-36.
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`Indeed, as Petitioner explained with respect to Claims 2 and 34, how every
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`claim element is taught and/or described by TS-25.331. See Pet. 30-33, 58. In
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`response, PO fails to address Petitioner’s arguments head on. Instead, PO’s
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`argument is based upon what it contends actual operating cellular systems included,
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`and not whether the disclosure of TS-25.331 disclosed a “legacy configuration….”
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`Similarly, PO’s argument regarding Claims 3 and 35 assumes a predefined
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`configuration mode and a predefined configuration are limited to the particular
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`“new, or predefined, PRACH configuration” that was not available before the ’388
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`patent. Again, however, PO assumes a limitation not present in the claims, and TS-
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`25.331 discloses configurations comprising predefined configurations with
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`associated TFS and the information it carries, including predefined values and
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`identity. See Pet., 32-33.
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`PO fails to proffer any additional arguments or specific arguments regarding
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`whether TS-25.331 discloses the additional limitations of Claims 6, 8, 9, 12, 38, 40,
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`41, 44, 56, 57, 62, and 63.
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`V. Ground 2: Claims 1-4, 6, 8, 9, 12, 33-36, 38, 40, 41, 44, 56, 57, 62, and 63
`are obviousness Over TS 25.331 V6.1.0
`PO relies on the same flawed arguments in a failed attempt to show claims 1-
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`4, 6, 8, 9, 12, 33-36, 38, 40, 41, 44, 56, 57, 62, and 63 are not obvious over TS 25.331
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`V6.1.0. PO Response, 36-37. PO also misconstrues the law and facts in an attempt
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`to manufacture evidence of non-obviousness.
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`If a prima facie case of obviousness is established, the burden of production
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`shifts to the applicant [PO] to come forward with arguments and/or evidence to rebut
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`the prima facie case. See, e.g., In re Dillon, 919 F.2d 688, 692 (Fed. Cir. 1990) (en
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`banc). Here, contrary to PO’s assertion, because PO failed to submit any alleged
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`objective evidence of non-obviousness until its Reply, Petitioner was not required to
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`address that evidence until now.
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`Objective evidence of non-obviousness must be reasonably commensurate in
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`scope with the claimed invention, and evidence of the commercial success of articles
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`not covered by the claims is not probative of non-obviousness. In re Huang, 100
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`F.3d 135, 139-40 (Fed. Cir. 1996); In re Paulsen, 30 F.3d 1475, 1482 (Fed. Cir.
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`1994) (holding that evidence of the commercial success of articles not covered by
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`the claims subject to the 35 U.S.C. § 103 rejection was not probative of non-
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`obviousness). Additionally, the evidence must be reasonably commensurate in
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`scope with the claimed invention. See, e.g., In re Kulling, 897 F.2d 1147, 1149 (Fed.
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`Cir. 1990); see also Leo Pharm. Prods. v. Rea, 726 F.3d 1346, 1358-59 (Fed. Cir.
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`2013) (listing types of objective indicia of non-obviousness).
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`As an initial matter, PO’s non-obviousness arguments all rely on the same
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`flawed arguments above—that the claims require an “additional transport block size
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`as an extension.” PO Response, 38-39. PO’s non-obviousness arguments thus are
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`not squared with the actual scope of the claimed invention.
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`A. Not Solving Long-Standing Problem
`PO makes an assertion that the claims of the ’388 patent solve a long-standing
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`problem of “information on the measured results of neighboring cells, for example,
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`quality and timing information such as measured results on RACH, traffic
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`measurement information, and inter frequency measurement information on CCCH
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`was frequently deleted, which increased the latency in call establishment or
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`prevented the transition to CELL-DCH.” In determining whether there has been
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`such a “long-standing problem, the length of the intervening time between the
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`publication dates of
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`the prior art and
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`the claimed
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`invention may be
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`considered. See Ecolochem, Inc. v. S. Cal. Edison Co., 227 F.3d 1361, 1376–
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`77 (Fed. Cir. 2000). Here, all of Petitioner’s prior art references are relatively close to
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`the priority date of the ’388 patent, making it difficult to determine the existence of a
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`long-standing problem. For example, in Leo Pharm. Prods., the prior art references
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`were between 14 and 22 years before the priority date. Id. at 1359. Here, by contrast,
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`the prior art references are at less than a year to three years before the critical date.
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`Further, PO has not established any period of time for the problem to exist. Using
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`PO’s own assert